Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88441448 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 110 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88441448/mark.png |
| LITERAL ELEMENT |
PEP |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
|
The mark has been refused registration under section 2(d) for likelihood of confusion with the mark in U.S. Registration No. 5410941 (“PERFORMANCE EMPOWERMENT PROGRAM
(PEP)”).
Applicant respectfully disagrees with the refusal on the ground that the services are not closely related, the channels of commerce are different, and the purchasers of
the services of applicant or the previous registrant are sophisticated.
First, the services (as amending in this response) are: “Educational services for prisoners, namely, courses of instruction in the field of
entrepreneurship.” The services for the previous registration are on-line to help individuals communicate and courses for “professional” clients. They are not related to prisons.
Second, the people looking for business and personal development through an internet business are not consumers buying commodity products. Such services cost hundreds
and thousands of dollars. They will not be confused by the use of the mark in services for inmates. Further, the inmates have to be recruited into the program with
which the mark is used. They are also highly sophisticated and can have no doubt they are not going to receive services that are appropriate for the general public.
Third, the services with which the mark is used are provided to the inmates through a unique channel of commerce: prisons. The services
have to be marked to the prisons first and then to the inmates. The channel of commerce for the services in the ‘941 Registration are internet based. They are
completely different.
In summary, because of the sophistication of the consumers, the vast difference between the goods and services, and the totally distinct channels of trade, Applicant the
refusal should be withdrawn, and the mark should be registered.
|
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
041 |
| DESCRIPTION |
educational services for prisoners |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 12/16/2004 |
| FIRST USE IN COMMERCE DATE |
At least as early as 12/16/2004 |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
041 |
| TRACKED TEXT DESCRIPTION |
educational services for prisoners; educational services for
prisoners, namely, courses of instruction in the field of entrepreneurship |
| FINAL DESCRIPTION |
| educational services for prisoners, namely, courses of instruction in the field of entrepreneurship |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 12/16/2004 |
| FIRST USE IN COMMERCE DATE |
At least as early as 12/16/2004 |
| ATTORNEY SECTION (current) |
| NAME |
Gordon T. Arnold |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| FIRM NAME |
ARNOLD & SAUNDERS, LLP |
| STREET |
4900 WOODWAY DRIVE, SUITE 900 |
| CITY |
HOUSTON |
| STATE |
Texas |
| POSTAL CODE |
77056 |
| COUNTRY |
US |
| PHONE |
713-972-1150 x111 |
| FAX |
713-972-1180 |
| EMAIL |
garnold@arnold-iplaw.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
P34182US |
| ATTORNEY SECTION (proposed) |
| NAME |
Gordon T. Arnold |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
ARNOLD & SAUNDERS, LLP |
| STREET |
4900 WOODWAY DRIVE, SUITE 900 |
| CITY |
HOUSTON |
| STATE |
Texas |
| POSTAL CODE |
77056 |
| COUNTRY |
United States |
| PHONE |
713-972-1150 x111 |
| FAX |
832-213-1039 |
| EMAIL |
garnold@arnold-iplaw.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
P34182US |
| OTHER APPOINTED ATTORNEY |
Jason A. Saunders, Christopher P. McKeon |
| CORRESPONDENCE SECTION (current) |
| NAME |
GORDON T. ARNOLD |
| FIRM NAME |
ARNOLD & SAUNDERS, LLP |
| STREET |
4900 WOODWAY DRIVE, SUITE 900 |
| CITY |
HOUSTON |
| STATE |
Texas |
| POSTAL CODE |
77056 |
| COUNTRY |
US |
| PHONE |
713-972-1150 x111 |
| FAX |
713-972-1180 |
| EMAIL |
garnold@arnold-iplaw.com; tton@arnold-iplaw.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
P34182US |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
Gordon T. Arnold |
| FIRM NAME |
ARNOLD & SAUNDERS, LLP |
| STREET |
4900 WOODWAY DRIVE, SUITE 900 |
| CITY |
HOUSTON |
| STATE |
Texas |
| POSTAL CODE |
77056 |
| COUNTRY |
United States |
| PHONE |
713-972-1150 x111 |
| FAX |
832-213-1039 |
| EMAIL |
garnold@arnold-iplaw.com; tton@arnold-iplaw.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
P34182US |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Gordon T. Arnold tt/ |
| SIGNATORY'S NAME |
Gordon T. Arnold |
| SIGNATORY'S POSITION |
Attorney of Record, TX bar member |
| SIGNATORY'S PHONE NUMBER |
713-972-1649 |
| DATE SIGNED |
02/12/2020 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Feb 12 14:29:41 EST 2020 |
| TEAS STAMP |
USPTO/ROA-XXX.XX.XX.XXX-2
0200212142941944890-88441
448-700b3991b3c8d0f832d84
a71e2eecd46448b2b244328b7
9efc4e31633f4952-N/A-N/A-
20200212142119049455 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88441448 PEP(Standard Characters, see http://uspto.report/TM/88441448/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The mark has been refused registration under section 2(d) for likelihood of confusion with the mark in U.S. Registration No. 5410941 (“PERFORMANCE EMPOWERMENT PROGRAM
(PEP)”).
Applicant respectfully disagrees with the refusal on the ground that the services are not closely related, the channels of commerce are different, and the purchasers of
the services of applicant or the previous registrant are sophisticated.
First, the services (as amending in this response) are: “Educational services for prisoners, namely, courses of instruction in the field of
entrepreneurship.” The services for the previous registration are on-line to help individuals communicate and courses for “professional” clients. They are not related to prisons.
Second, the people looking for business and personal development through an internet business are not consumers buying commodity products. Such services cost hundreds
and thousands of dollars. They will not be confused by the use of the mark in services for inmates. Further, the inmates have to be recruited into the program with
which the mark is used. They are also highly sophisticated and can have no doubt they are not going to receive services that are appropriate for the general public.
Third, the services with which the mark is used are provided to the inmates through a unique channel of commerce: prisons. The services
have to be marked to the prisons first and then to the inmates. The channel of commerce for the services in the ‘941 Registration are internet based. They are
completely different.
In summary, because of the sophistication of the consumers, the vast difference between the goods and services, and the totally distinct channels of trade, Applicant the
refusal should be withdrawn, and the mark should be registered.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for educational services for prisoners
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/16/2004 and first used in commerce at least as early as 12/16/2004 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: educational services for prisoners;
educational services for prisoners, namely, courses of
instruction in the field of entrepreneurshipClass 041 for educational services for prisoners, namely, courses of instruction in the field of entrepreneurship
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/16/2004 and first used in commerce at least as early as 12/16/2004 , and
is now in use in such commerce.
The applicant's current attorney information: Gordon T. Arnold. Gordon T. Arnold of ARNOLD & SAUNDERS, LLP, is located at
4900 WOODWAY DRIVE, SUITE 900
HOUSTON, Texas 77056
US
The docket/reference number is P34182US.
The phone number is 713-972-1150 x111.
The fax number is 713-972-1180.
The email address is garnold@arnold-iplaw.com
The applicants proposed attorney information: Gordon T. Arnold. Other appointed attorneys are Jason A. Saunders, Christopher P. McKeon. Gordon T. Arnold of ARNOLD & SAUNDERS, LLP, is a
member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
4900 WOODWAY DRIVE, SUITE 900
HOUSTON, Texas 77056
United States
The docket/reference number is P34182US.
The phone number is 713-972-1150 x111.
The fax number is 832-213-1039.
The email address is garnold@arnold-iplaw.com
Gordon T. Arnold submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S.
Commonwealth or territory.
The applicant's current correspondence information: GORDON T. ARNOLD. GORDON T. ARNOLD of ARNOLD & SAUNDERS, LLP, is located at
4900 WOODWAY DRIVE, SUITE 900
HOUSTON, Texas 77056
US
The docket/reference number is P34182US.
The phone number is 713-972-1150 x111.
The fax number is 713-972-1180.
The email address is garnold@arnold-iplaw.com; tton@arnold-iplaw.com
The applicants proposed correspondence information: Gordon T. Arnold. Gordon T. Arnold of ARNOLD & SAUNDERS, LLP, is located at
4900 WOODWAY DRIVE, SUITE 900
HOUSTON, Texas 77056
United States
The docket/reference number is P34182US.
The phone number is 713-972-1150 x111.
The fax number is 832-213-1039.
The email address is garnold@arnold-iplaw.com; tton@arnold-iplaw.com
SIGNATURE(S)
Response Signature
Signature: /Gordon T. Arnold tt/ Date: 02/12/2020
Signatory's Name: Gordon T. Arnold
Signatory's Position: Attorney of Record, TX bar member
Signatory's Phone Number: 713-972-1649
The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and
any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another
U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed
revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter;
or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.
Mailing Address: GORDON T. ARNOLD
ARNOLD & SAUNDERS, LLP
4900 WOODWAY DRIVE, SUITE 900
HOUSTON, Texas 77056
Mailing Address: Gordon T. Arnold
ARNOLD & SAUNDERS, LLP
4900 WOODWAY DRIVE, SUITE 900
HOUSTON, Texas 77056
Serial Number: 88441448
Internet Transmission Date: Wed Feb 12 14:29:41 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2020021214294194
4890-88441448-700b3991b3c8d0f832d84a71e2
eecd46448b2b244328b79efc4e31633f4952-N/A
-N/A-20200212142119049455